Ranjan Narula Associates
                                                               September, 2014

Infringement action against registered proprietor is maintainable
The Indian Hotels Company Limited (Plaintiff)* approached Delhi High Court for protecting its registered brand JIVA for SPA services which was being infringed by Ashwajeet Garg and others (Defendant) by using the virtually identical mark ZIVA for identical services.

The Plaintiff asserted that JIVA is arbitrary mark and was adopted in the year 2004 in relation to SPA services. It further asserted that it is registered proprietor of JIVA mark in India and worldwide. The Plaintiff came across ZIVA mark which was phonetically similar mark to JIVA mark as the pronunciation of the letter Z is similar to J. Further, ZIVA mark was also used for SPA services

The Defendant submitted that it is registered proprietor of ZIVA mark in class 42 since 1st October 2009, claiming use since 1st February 2007. The Plaintiff is not entitled to exclusivity in the JIVA mark as there are other entities using JIVA mark and Plaintiff had not sued them. There is no similarity between the rival marks. The infringement suit is not maintainable since it is registered proprietor of JIVA mark.

The Court held that the rival marks are similar. The Plaintiff is prior user of the JIVA mark and restrained the Defendant from using ZIVA mark. There are other entities using JIVA mark is not a valid defense. Further, where registration of the mark is not correctly granted, the Defendant cannot take benefit of Section(s) 28(3) and 30of the Trade Marks Act, 1999. There is no bar to infringement suit against another registered proprietor and in such a suit, while staying further proceedings pending decision of the registrar on rectification, an interim order including of injunction restraining use of registered trademark by the Defendant can be made, if the court is prima facie convinced of invalidity of registration of the Defendant's mark.

* The Indian Hotels Company Ltd. Vs. Ashwajeet Garg and Ors.; CS(OS) 394/2012, Delhi High Court
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